Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`Case No. 6:17-cv-01217
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`LOGANTREE LP,
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` Plaintiff,
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`GARMIN INTERNATIONAL, INC. and
`GARMIN USA, INC.,
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` Defendants.
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`GARMIN’S RESPONSE TO LOGANTREE’S MOTION TO PARTIALLY EXCLUDE
`CERTAIN OPINIONS OF WILLIAM R MICHALSON UNDER RULE 702
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`Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 2 of 6
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`LoganTree argues to exclude certain opinions of Garmin’s non-infringement expert, Dr.
`Bill Michalson, under the theory Dr. Michalson’s opinions are “legally irrelevant” and “cannot
`help the trier of fact.” Dkt. 216, at 4. Specifically, LoganTree seeks to exclude Dr. Michalson’s
`opinion that Garmin’s accused products practice (or “use”) Garmin’s own patented technology
`because it believes this evidence is “irrelevant.” But LoganTree’s motion rests on legally erroneous
`arguments and an apparent misunderstanding of the purpose of Dr. Michalson’s testimony, a
`purpose that LoganTree never explains to the Court. When a proper understanding of the use of
`Dr. Michalson’s opinion is applied, the law fully supports Garmin’s position and Dr. Michalson’s
`opinion.
`The Garmin watches involved in this litigation include many features unrelated to
`LoganTree’s patent and the accused step counting functionality. For example, Garmin’s watches
`can measure your heartrate, calculate your stress levels, receive satellite signals to determine your
`location, show a map, navigate you to your destination, let you compete against “virtual”
`opponents, calculate your altitude using pressure sensors, provide weather updates, and literally a
`thousand other functions. As one would suspect, Garmin has many of its own patents on a number
`of these critical features. LoganTree is using its patent—allegedly covering recording the precise
`time when a user meets his or her daily step goal—to attempt to collect ~$9M from Garmin for
`the alleged infringement. Because the value of the step goal feature is relatively small, LoganTree’s
`expert has sought to collect damages on the value of the entire watch, including Garmin’s own
`patented features for which LoganTree has no claim of infringement. LoganTree must not be
`allowed to claim money on Garmin’s own inventions. This is precisely why the Federal Circuit
`requires Logantree’s damages to be “apportioned” to the value (if any) of its own patent. Exmark
`Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1347–48 (Fed. Cir. 2018)
`(“It is well-settled law that a damages expert must “apportion the value of the patentee’s invention
`in comparison to the value of the whole [accused product].”). Dr. Michaelson is certainly entitled
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`Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 3 of 6
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`to opine on how Garmin uses its own patents, and Garmin’s economic expert is then entitled to
`critique LoganTree for seeking damages on Garmin’s own inventions. Dr. Michalson’s opinion on
`how Garmin uses its own patents is fundamental to this analysis and weighs directly on
`apportionment and the value of Logantree’s patent.
`LoganTree has requested upwards of $9 million for its alleged damages, an absurd amount
`under any theory for a patent that amounts to little more than counting steps. To support this
`bloated request, LoganTree proffered an opinion from its damages expert, Nik Volkov, that seek
`damages on the entire watch, not just the portion of the product that relates to the accused step
`counting functionality. In his deposition, Dr. Volkov then admitted he performed no
`“apportionment analysis” to determine what portion of the value of Garmin’s watches is tied to
`the step counting functionality. Ex. A (Volkov Dep.), 9:12-18; 9:25-10:8; 18:24-19:3. This is flatly
`against Federal Circuit precedent.
`It is well-settled law that a damages expert must “apportion the value of the patentee’s
`invention in comparison to the value of the whole [accused product].” Exmark, 879 F.3d at 1347–
`48. Proper apportionment analysis necessitates accounting for a defendant’s own patents that cover
`the accused products where those patents contribute to the overall value of the accused product.
`Id. at 1350. As far back as Blake v. Robertson, the Supreme Court held a “complainant was []
`entitled to only nominal damages” where he had not shown what portion of his lost profits was
`due to “other patents embraced in [the] machines” he sold. 94 U.S. 728, 733–34 (1876). And the
`Federal Circuit has found that “the basic principle of apportionment . . . applies in all of patent
`damages.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1283 n. 3 (Fed. Cir. 2017).
`Further, the Federal Circuit has repeatedly overturned damages verdicts that failed to distinguish
`between value allocated to patents found to be infringed, and those found not to be infringed.
`Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327,
`1345–46 (Fed. Cir. 2003) (overturning district court damages award that failed to distinguish
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`Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 4 of 6
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`allocation of profits attributable to the infringed ’376 Patent versus the not infringed ’991 Patent);
`Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1309–10 (Fed. Cir. 2007)
`(granting new damages trial where the jury failed to indicate apportionment of damages between
`multiple patents, and one patent was sent for retrial on infringement).
`This is precisely how Dr. Michalson’s opinions properly fit into this case. One way of
`performing the required apportionment analysis is to “itemiz[e] the relative value” of the other
`patented components. Exmark, 879 F.3d at 1350. Dr. Michalson is a technical expert. He analyzed
`Garmin’s own patents and determined whether Garmin’s own patented technology was being used
`in the accused watches. Garmin’s economic expert, Mr. Finch, then relied on Dr. Michalson’s
`technical analysis of Garmin’s own patents to analyze and critique LoganTree’s damages request
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`for seeking damages on Garmin’s own patented inventions. Ex. B (Report of Chuck Finch), at ¶¶
`60-63.
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`The Federal Circuit has expressly found such an analysis proper. For example, in Arctic
`Cat Inc. v. Bombardier Recreational Products Inc., the Federal Circuit found it proper for
`Bombardier’s economic expert to rely upon Bombardier’s separate technical expert’s analysis of
`the comparability of alternative technologies in performing his damages analysis. 876 F.3d 1350,
`1369–70 (Fed. Cir. 2017). And in Apple Inc. v. Motorola, Inc., the Federal Circuit found Apple’s
`economic expert provided sufficient factual support for his opinions where he relied, in part, on
`Apple’s technical expert’s opinion regarding the similarity of certain touchpad gestures to the
`claimed features of the asserted patent. 757 F.3d 1286, 1316, 1319–20 (Fed. Cir. 2014), overruled
`on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).
`The Apple court further clarified that any dispute as to the accuracy of the Apple’s expert’s opinion
`on accurate damages benchmarks goes to the weight, and not the admissibility, of the evidence.
`Id. at 1319. This maxim holds equally true in this case, where Dr. Michalson’s opinions will weigh
`directly on the issue of damages and proper apportionment. If LoganTree wishes to argue that it is
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`Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 5 of 6
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`entitled to damages on Garmin’s entire product, including features invented solely by Garmin,
`LoganTree is entitled to challenge Dr. Michalson’s and Mr. Finch’s opinions through cross
`examination.
`Accordingly, Garmin respectfully requests that the Court deny LoganTree’s Motion to
`Exclude Dr. Michalson from opining at trial that Garmin’s accused products practice Garmin’s
`own patents.
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`Dated: September 8, 2022
` Respectfully submitted,
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` ERISE IP, P.A.
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` /s/ Adam P. Seitz
` Adam P. Seitz, KS Bar #21059
` Megan J. Redmond, KS Bar #21999
` Carrie A Bader, KS Bar #24436
` Clifford T. Brazen, KS Bar #27408
` ERISE IP, P.A.
` 7015 College Blvd., Suite 700
` Overland Park, Kansas 66211
` Telephone: (913) 777-5600
` Facsimile: (913) 777-5601
` adam.seitz@eriseip.com
` megan.redmond@eriseip.com
` carrie.bader@eriseip.com
` cliff.brazen@eriseip.com
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`Attorneys for Defendants Garmin
`International, Inc. and Garmin USA, Inc.
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`Case 6:17-cv-01217-EFM Document 226 Filed 09/08/22 Page 6 of 6
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`CERTIFICATE OF SERVICE
`I hereby certify that, on September 8, 2022, the foregoing document filed with the Clerk
`of the Court using CM/ECF and that all counsel of record who are deemed to have consented to
`electronic service are being served with a copy of this document via the Court’s CM/ECF system
`accordingly.
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`By: /s/ Adam P. Seitz
`Adam P. Seitz
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